WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Red Bull GmbH v. Chai Larbthanasub

Case No. D2003-0709

 

1. The Parties

The Complainant is Red Bull GmbH, Fuschl am See, Austria, represented by Schönherr Rechtsanwälte OEG, Austria.

The Respondent is Chai Larbthanasub, Samutprakarn, Thailand.

 

2. The Domain Name and Registrar

The disputed domain name <thairedbull.com> is registered with Stargate.com, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 9, 2003. On September 9, 2003, the Center transmitted by email to Stargate.com, Inc. a request for registrar verification in connection with the domain name at issue. On September 9, 2003, Stargate.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 2, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was October 22, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on November 5, 2003.

The Center appointed Mr. Fabrizio Bedarida as the sole panelist in this matter on November 5, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

The language of the proceeding is English.

 

4. Factual Background

Complainant, an Austrian company, is the producer of the RED BULL energy drink and has registered or applied to register a range of trademarks consisting or including the words RED BULL. Complainantís registered trademark RED BULL pre-dates Respondentís registration of the disputed domain name.

The Respondent registered the domain name <thairedbull.com> on October 27, 2002.

 

5. Partiesí Contentions

A. Complainant

The Complainant submits that:

The domain name <thairedbull.com> was registered eight years after Complainantís RED BULL international launch.

Respondent operates a website under this domain name by using the identical logo of Complainantís energy drinks, identical trade name, providing the identical product (energy drink) of Complainant.

RED BULL GmbH is the largest world-wide producer of energy drinks.

The RED BULL is a world renowned trademark.

The RED BULL energy drinks, through sales activities, television broadcasts, Internet activities and events sponsored by Complainant, has become well-known in many countries and famous in Austria.

The domain name <thairedbull.com> is confusingly similar to the trademark RED BULL owned by Complainant.

That upon information and belief, Respondent has no rights or legitimate interests in respect of the disputed domain name.

Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or any variations thereof, or to apply for or use any domain name incorporating any of those trademarks or any variations thereof.

As regards the fact that the domain name was registered and is being used in bad faith, Complainant alleges that:

The Respondent cannot have ignored Complainantís trademark RED BULL, thus the registration of the disputed domain name can only have occurred in bad faith.

Respondent seeks to create the false and misleading impression that he acts in accordance with Complainant.

Respondent is trying to exploit the fame and reputation of Complainantís RED BULL trademarks.

B. Respondent

The Respondent did not reply to the Complainantís contentions. Thus Respondent has failed to submit any statement. He has not contested the allegations in the Complaint and the Panel shall decide on the basis of Complainantís submissions, and shall draw such inferences from the Respondentís default that it considers appropriate (paragraph 14(b) of the Rules).

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain names registered by the Respondent be transferred to the Complainant:

1) the domain names are identical or confusingly similar to a trademark or service mark ("mark") in which the Complainant has rights;

2) the Respondent has no rights or legitimate interests in respect of the domain names;

3) the domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

Complainant has demonstrated rights in the RED BULL trademark. It is unquestionable that Complainantís trademark registrations pre-date Respondentís domain name registration.

The domain name <thairedbull.com> integrates the trademark RED BULL in its entirety with a description of geographical nature, that is "thai" as a prefix. The panel here agrees with Complainantís allegation that consumers world wide will likely think that "thairedbull" is a variation of Complainantís trademarks. The mere addition of a descriptive term to an identical trademark, has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark. This is especially true considering that, in the present case, the descriptive term is a geographical term (i.e. Thai for Thailand) and the trademark RED BULL is renowned worldwide. It is then more than likely, that consumers will be led to think about <thairedbull.com> as Complainantís domain name for Thai users/clients (see e.g. Red Bull Gmbh v. Tony Marinelli WIPO Case No. D2001-0522 relating to the domain names <redbullwesterncanada.com>, <redbullcanada.org> and <redbullcanada.net>, where the Panel finding was that "the combination of a trademark with a geographical name is common practice for many domain names and does not exclude confusing similarity"; Inter-IKEA v. Polanski, WIPO Case No. D2000-1614 relating to the domain name <ikeausa.com>; Wal-Mart stores Inc v. Walmarket Canada, WIPO Case No. D2000-0150 relating to the domain name <walmartcanada.com>; and Viacom International Inc. v. Emperor Sedusa WIPO Case No. D2001-1438 related to the domain name <mtvasia.net> where the Panel found that: "The domain name <mtvasia.net> is identical to the Complainantís trademark MTV with the addition of the geographical term "asia." The first and inherently distinctive portion of the domain name <mtvasia.net> is identical to Complainantís trademark MTV. The Respondent has associated the geographical "asia" with the word MTV to create a domain name which is confusingly similar with Complainantís trademark MTV."

In view of all the above, the Panel finds that the disputed domain name is confusingly similar to the Complainantís trademark RED BULL.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The respondent in a UDRP proceeding does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:

(a) that before any notice to the respondent of the dispute, he or she used or made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(b) that the respondent is commonly known by the domain name, even if he or she has not acquired any trademark rights; or

(c) that the respondent intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

The Respondent does not appear to have any connection or affiliation with the Complainant, which has not licensed or otherwise authorised Respondent to use or apply for any domain name incorporating the RED BULL trademark. Respondent does not appear to make any legitimate use of the domain name for his own commercial or non-commercial activities. Respondent has not been known under this domain name. Respondent has not filed any Response to the Complaint and has not alleged any facts or elements to justify prior rights and/or legitimate interests in the disputed domain name. Therefore, the Panel concludes that all the above, constitutes prima facie evidence of a lack of rights to or legitimate interests in the domain name.

Accordingly, the Panel finds that the Complainant has satisfied the burden of proof with respect to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Respondent has registered a domain name which mirrors an internationally well known trademark to which he cannot possibly have acquired any rights. According to the Policy criteria Complainant has shown that Respondent, when registering the domain name at issue in these proceedings, was well aware of the Complainantís trademark RED BULL and intentionally chose to register it as a domain name. Thus it appears that Respondent, being aware that the use of a well known trademark would create confusion among visitors, chose the <thairedbull.com> domain name, in order to attract on his website searchers who were looking for Complainantís products. It is Panelís opinion that the addition of the geographical term "thai" to the trademark "red bull" may increase the degree of similarity, as it leads to believe that the Complainant is doing business in Thailand using the disputed domain name. As previously said, consumers are led to think about <thairedbull.com> as a domain name of the Complainant, specifically created for Thai clients. In addition, the Panel agrees with previous panels view that registration and use of a domain name corresponding to a well known trademark to sell competitors products amounts to bad faith use and registration (see The Chase Manhattan Corp. et al. v. Whitely, WIPO Case No. D2000-0346 where the finding was that: "Respondentís infringing use of Complainantís trademark is aimed at parasitizing the goodwill of Complainantís trademark to attract customers to Respondentís competing service. This is compelling evidence of bad faith in the registration and use of the disputed domain name" see also AutoNation, Inc. v. Paul Schaefer WIPO Case No. D2001-0289). Finally, the Panel notes that, in the present case, rule 4(b)(iv) of the Policy perfectly applies, which states that evidence of bad faith registration and use is given when: "Respondent has intentionally used the domain name to attract users to Respondentís website for commercial gain by intentionally creating a likelihood of confusion with Complainantís mark."

The Panel is therefore convinced that the registration under such circumstances and the ensuing use of the domain name is evidence of Respondentís registration and use in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <thairedbull.com> be transferred to the Complainant.

 


 

Fabrizio Bedarida
Sole Panelist

Dated: November 11, 2003